Who has the right to patent the invention? Problem:

1. Who has the right to patent the invention? Problem: On 1/15/04, ABC invented a process for treating wood to make them termite-proof, using asphalt and used oil and heating it to a pre-set temperature for a definite number of hours. On 2/15/04, DEF, acting independently of ABC, invented essentially the same invention and immediately applied for a patent with the IP Office, ahead of ABC.

2. 1.First filer SECTION 28. Right to a Patent. - The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more persons have jointly made an invention, the right to a patent shall belong to them jointly. (Sec. 10, R.A. No. 165a) SECTION 29. First to File Rule. - If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the …

3. person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date. (3rd sentence, Sec. 10, R.A. No. 165a.) IP Code follows first-to-file rule Purpose is to encourage early filing and disclosure for the public benefit

4. Who owns the patent? Problem: ADK is a software programmer and a lawyer in the firm of XYZ. During this work hours, he invented a device that reduces the power consumption of his air-conditioner while enhancing the cooling properties of the freon, resulting in increased efficiency and significant cost savings. When ZYZ learned of the invention, he claimed that the invention belongs to the firm. Who has the right to patent it?

5. 1] in an employment relationship Section 30.2. In case the employee made the invention in the course of his employment contract, the patent shall belong to: (a) The employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer. (b) The employer, if the invention is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary. (n)

6. This is called work-for-hire doctrine • Problem: • RT Co. hired MLK, an engineer, as a salesman for its line of agricultural equipment. MLK signed a contract providing that any invention he might develop during his employment belongs to RT Co. • Is the stipulation valid? • May the contract provide instead that RT Co. shall have the exclusive right to buy the invention under mutually acceptable terms?

7. 2] in a commissioned relationship SECTION 30. Inventions Created Pursuant to a Commission. - 30.1. The person who commissions the work shall own the patent, unless otherwise provided in the contract.

8. Where the first to file is not the true inventor First-to-invent rule leads to contentious issues on priority of invention. First-to-file rule avoids that issue. But IP Code preserves some rights of first inventor

9. Who has the right to the patent? Problem: Pedro, a welder, invented a side-tilting wheelbarrow. His assistant, Juan, who helped him develop the invention, filed a patent for it in his name before Pedro could do so. Does Juan own the invention under the first-to-file rule? Does Pedro have a remedy against Juan? What are his remedies?

10. Person with the right to the patent  Section 67. Patent Application by Persons Not Having the Right to a Patent. - 67.1. If a person referred to in Section 29 other than the applicant, is declared by final court order or decision as having the right to the patent, such person may, within three (3) months after the decision has become final:

11. (a) Prosecute the application as his own application in place of the applicant; • (b) File a new patent application in respect of the same invention; • Request that the application be refused; or • (d) Seek cancellation of the patent, if one has already been issued. • 67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a new application filed under Subsection 67. 1(b). (n)

12. True and actual inventor SECTION 68. Remedies of the True and Actual Inventor. - If a person, who was deprived of the patent without his consent or through fraud is declared by final court order or decision to be the true and actual inventor, the court shall order for his substitution as patentee, or at the option of the true inventor, cancel the patent, and award actual and other damages in his favor if warranted by the circumstances. (Sec. 33, R.A. No. 165a)

13. Problem: Oscar, a biotechnology professor at UPLB, bio-engineered a tomato vaccine that works like clarithromycin. He opted not to patent it and in fact he lectured to his students how to practice the invention. His graduate student at UPLB accessed Oscar’s specifications for the invention and filed it in his name with the IP Office. Can Oscar recover the invention and have it patented in his name?

14. If true and actual inventor did not seek patent- • Is not the patent in the public domain if he exploited it? • If he exploited it, should it not be treated as prior art and should foreclose any patenting whether by the first inventor or the first filer? • If he did not exploit it and did not seek a patent, does entitling him to a patent defeat the purpose of the first-to-file rule?

15. Essential element is fraud or lack of consent • Fairer rule than the one in favor of later inventor who did not seek patent • Substitution means he steps into the shoes of the patentee so patent term is not extended • Another option is cancellation of patent, beneficial to public but not to true inventor • Whether substitution or cancellation is sought, actual and other damages may be sought

16. SECTION 236. Preservation of Existing Rights. - Nothing herein shall adversely affect the rights on the enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act. (n) The provision assumes two persons are involved: the prior user of the invention and the person who obtained rights to the invention.

17. Problem: Manny, the lawyer who invented the air-conditioner with energy –saving features, did not file a patent for his invention and manufactured only enough of the device for the use of his family and office mates. Julio, an engineer, invented the same device on his own and had it patented in his name. When he learned that Manny was using, manufacturing and distributing the device to his family and friends, he sued for patent infringement. Will the action prosper?

18. Whose rights are involved, the patentee’s or the prior user in good faith? If there is a prior user in good faith, what did the patentee acquire if invention lacked novelty? If the patentee did not acquire any right, should not the patent simply be canceled for lack of novelty?

19. Paris Convention for the Protection of Industrial Property • Principle of national treatment - as regards the protection of industrial property, each contracting State must grant the same protection to nationals of the other contracting States as it grants to its own nationals • Right of priorityon the basis of a regular first application filed in one of the contracting States, the applicant may, within a certain period of time (12 months for patents and utility models; six months for industrial designs and trademarks) apply for protection in any of the other contracting States …

20. these later applications will then be regarded as if they had been filed on the same day as the first application, in other words, these later applications will have priority (hence the expression “right of priority”) over applications which may have been filed during the said period of time by other persons for the same invention, utility model, trademark or industrial design.

21. these later applications, being based on the first application, will not be affected by any event that may have taken place in the interval, such as any publication of the invention or sale of articles incorporating the industrial design or the trademark

22. An applicant who desires protection in several countries is not required to present all his applications are the same time but has six or 12 months at his disposal

23. Patent Cooperation Treaty Aims: simplify and economize on cost of obtaining patent protection, facilitate the acquisition of technical information Before PCT, patent applicant filed separate applications for the same invention for each country where he desired protection Under PCT, a single international application which has the same effect as filing separate applications with the Patent Office of each of the countries party to the PCT that are designated in the application

24. Application usually filed with the applicant's national office called the receiving Office The receiving Office checks the application for compliance with formalities Before consideration by other designated offices, it is subjected to an "international search" which is carried out by an International Searching Authority, with high quality search of the relevant prior art

25. Results of this search are set out in an international search report which is made available both to the applicant and, ultimately, to the designated Offices An "international preliminary examination," a substantive examination, is conducted; optional for the applicant and for the Contracting States but most States accepted provision on examination

26. After application has been searched and published, it is sent to the Offices of the countries where protection was desired, on the basis of international preliminary examination report, national offices either to grant or to refuse a patent

27. What should the patent application contain? Section 32. The Application. - 32.1. The patent application shall be in Filipino or English and shall contain the following: (a) A request for the grant of a patent; (b) A description of the invention; (c) Drawings necessary for the understanding of the invention; (d) One or more claims; and (e) An abstract.

28. 32.2. No patent may be granted unless the application identifies the inventor. If the applicant is not the inventor, the Office may require him to submit said authority. (Sec. 13, R.A. No. 165a)

29. Patent Terms of the Art DESCRIPTION is the requirement that the invention claimed be the invention described in the DISCLOSURE of the patent. The DISCLOSURE portion of the patent must describe an invention having all the material features of the claims. DISCLOSURE must support all the claims, this is the bargain between for the grant of monopoly and the disclosure

30. “This court has sufficiently recognized that there is a description of the invention requirement … separate and distinct from the enablement requirement.. A specification may contain a disclosure that is sufficient to enable one skilled in the art to make and use the invention and yet fail to comply with the description of the invention requirement.” In re Backer & Pehl, 559 F.2d 588, 154 USPQ 470

31. ENABLEMENT is the requirement that the disclosure of a patent must, when the application is filed, give a sufficiently clear description of the invention so as to enable a person having ordinary skill in the technology to make and use the invention without undue experimentation ENABLEMENT is a crucial condition of a valid patent because what the inventor must give to the public in return for the grant of a limited period of exclusive right is a complete and candid

32. “Description of the invention so as to enable others to understand it and to be able to use it as a stepping stone to further develop the technology. Also, once the patent expires, the public is entitled to use the invention and is entitled to a full and complete description of it in order to do so. Full disclosure of the invention and the manner of making and using it on issuance of the patent immediately increases the storehouse of public information available for further research and

33. and assures that the invention will be freely available to all once the statutory period of monopoly expires.” 2 D. Chisum, Patents The description must be the BEST MODE embodiment of the invention known to the inventor at the time of the patent application

34. “ENABLEMENT is the legal determination of whether a patent enables one skilled in the art to make and use the claimed invention … is not precluded even if some experimentation is necessary although the amount of experimentation must not be unduly extensive … Further, a patent need not teach, and preferably omits, what is well known in the art.” Hybritech Inc. vs. Monoclonal Antibodies, Inc. 802 F 2d 1367, 231 USPQ 81

35. ENABLING PRIOR ART To qualify as prior art, a reference must be enabling; it must describe sufficiently the invention so as to enable one skilled in the art to make and use the invention “It is well settled that prior art must sufficiently describe the claimed invention to have placed the public in possession of it…Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his own knowledge to make the

36. ENABLING PRIOR ART To qualify as prior art, a reference must be enabling; it must describe sufficiently the invention so as to enable one skilled in the art to make and use the invention “It is well settled that prior art must sufficiently describe the claimed invention to have placed the public in possession of it…Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his own knowledge to make the

37. claimed invention… Accordingly, even if the claimed invention is disclosed in a printed publication, that disclosure will not suffice as prior art if it was not enabling…It is not, however, necessary that the invention disclosed in a publication shall have actually been made in order to satisfy the enablement requirement.” In re Donohue, 766 F2d 531, 226 USPQ 619

38. Examination Phase Formality Examination SECTION 42. Formality Examination. SECTION 43. Classification and Search. SECTION 44. Publication of Patent Application. SECTION 45. Confidentiality Before Publication. Substantive Examination SECTION 48. Request for Substantive Examination.

39. SECTION 49. Amendment of Application. Issuance SECTION 50. Grant of Patent. SECTION 51. Refusal of the Application. SECTION 52. Publication Upon Grant of Patent. SECTION 53. Contents of Patent.

40. TRANSFER OF PATENTS  SECTION 103. Transmission of Rights. SECTION 104. Assignment of Inventions. SECTION 105. Form of Assignment. SECTION 106. Recording. - 106.1. SECTION 107. Rights of Joint Owners. VOLUNTARY LICENSING SECTION 85 et seq. Voluntary License Contract.

41. Protection starts – Upon Filing SECTION 31. Right of Priority. - An application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign application: Provided, That: (a) the local application expressly claims priority; (b) it

42. is filed within twelve (12) months from the date the earliest foreign application was filed; and (c) a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines. (Sec. 15, R.A. No. 165a)

43. Upon Publication  SECTION 46. Rights Conferred by a Patent Application After Publication. - The applicant shall have all the rights of a patentee under Section 76 against any person who, without his authorization, exercised any of the rights conferred under Section 71 of this Act in relation to the invention claimed in the published patent application, as if a patent had been granted for that invention: Provided, That the said person had:

44. 46.1. Actual knowledge that the invention that he was using was the subject matter of a published application; or 46.2. Received written notice that the invention that he was using was the subject matter of a published application being identified in the said notice by its serial number: Provided, That the action may not be filed until after the grant of a patent on the published application and within four (4) years from the commission of the acts complained of (n)

45. Upon Grant •  SECTION 71. Rights Conferred by Patent. - 71.1. A patent shall confer on its owner the following exclusive rights: • Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product;

46. (b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process. 71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing contracts for the same. (Sec. 37, R.A. No. 165a)

47. Foreign Inventors SECTION 3. International Conventions and Reciprocity. SECTION 77. Infringement Action by a Foreign National. SECTION 231. Reverse Reciprocity of Foreign Laws.

48. SECTION 54. Term of Patent. - The term of a patent shall be twenty (20) years from the filing date of the application. (Sec. 21, R.A. No. 165a) SECTION 55. Annual Fees.